Reckitt Benckiser LLC v S C. Johnson & Son, Inc - [2017] APO 35

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Reckitt Benckiser LLC v S. C. Johnson & Son, Inc. [2017] APO 35

Patent Application: 2009215860

Title:Cleaning composition that provides residual benefits

Patent Applicant:  S. C. Johnson & Son, Inc.
Opponent:  Reckitt Benckiser LLC
Delegate:  Isaac Tan
Decision Date:  13 July 2017
Hearing Date:  23 May 2017 via teleconference

Catchwords: PATENTS – opposition to the allowance of amendments under section 102(2)(a) and section 102(2)(b) of the Patents Act 1990 – Commissioner becomes Functus officio at the time a decision to refuse becomes operative – amendments are allowable – costs awarded against the opponent.

Representation:
Applicant via video conference:
David Myers, patent attorney of Spruson & Ferguson
Anna Goldys, patent attorney of Spruson & Ferguson

Opponent via telephone:
Charles Tansey, patent attorney of Shelston IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009215860

Title:Cleaning composition that provides residual benefits

Patent Applicant: S. C. Johnson & Son, Inc.
Date of Decision: 13 July 2017
DECISION
The Opposition is unsuccessful on all grounds.
I allow the amendments.

I award costs against Reckitt Benckiser LLC.
REASONS FOR DECISION
Background

Australian Patent Application No. 2009215860 (the “present application”) in the name of S. C. Johnson & Son, Inc. (the “Applicant”) was filed on 19 February 2009 as the national phase entry of PCT/US2009/001058 and has a priority date of 21 February 2008.
On 1 April 2015, amendments were proposed (the “earlier amendments”), opposed (the “earlier opposition”) on 11 August 2015 and subsequently refused on 12 July 2016 in Reckitt Benckiser LLC v S.C. Johnson & Sons, Inc. [2016] APO 47 (the “earlier decision”).
On 22 July 2016, the Applicant proposed new amendments (the “proposed amendments”) to address issues identified in the earlier decision. Leave was granted to amend, and the proposed amendments were advertised in the Australian Official Journal of Patents dated 18 August 2016.
On 13 October 2016, Reckitt Benckiser LLC (the “Opponent”) filed a Notice of Opposition to the proposed amendments.
Grounds of Opposition
According to the Statement of Grounds and Particulars (the “SGP”), the opponent oppose the present amendments under subsection 102(2)(a) and subsection 102(2)(b) of the Patents Act 1990 (the “Act”). Under subsection 102(2)(b), that the specification as amended would not comply with subsection 40(3) of the Act.
Evidence and Submissions
On 7 November 2016, the Opponent elected not to file Evidence in Support.
Evidence in Answer to the SGP consists of a Statutory Declaration by David Keith Myers (“Myers”) dated 11 January 2017 with exhibit DKM-1. Exhibit DKM-1 contains a Statutory Declaration by Jason Richard Stokes dated 4 January 2016 with Exhibits JRS-1 to JRS-4.
Evidence in Reply consists of a Statutory Declaration by Paul Meredith Wynn-Hatton (“Wynn-Hatton”) with exhibits PWH-16 to PWH-17.
The Opponent and Applicant’s summary of submissions were respectively filed on 9 May 2017 and 16 May 2017.
On 23 May 2017 the day of the hearing:
·The Applicant provided a copy of Kornelis’ Kunsthars Producten Industrie BV v WR Grace & Co-Conn [1994] FCA 969; (1994) AIPC 91-056; and
·The Opponent provided a summary of matters and relevant authorities to be discussed at the hearing.
The Law
As the request for examination of the patent application was filed before 15 April 2013, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment(Raising the Bar) Act 2012 do not apply to the present patent application.
Section 102(2) of the Patents Act as it existed prior to the introduction of the Raising the Bar Act is as follows:
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment :
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
The “relevant time” set out in Section 102(2) is after the specification has been accepted. Therefore, as the present specification had been accepted when the amendments were requested, the requirements of Section 102(2) apply.
It is plain from the wording of Section 102(2) that the test provided by this section of the Patents Act is confined to matters which arise as a result of amendment[1]. Consequently any pre-existing deficiencies in the specification which are unaffected by amendment are irrelevant to the present action.
[1] Kornelis’ Kunsthars Producten Industrie BV v WR Grace & Co-Conn [1994] FCA 969; (1994) AIPC 91-056 at [24] – [26]
The applicable parts of section 40 of the Patents Act 1990 as they apply to the present case are set out below:
(2) A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent – end with a claim or claims defining the invention.
(3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
The proposed amendments
Claim 1 as proposed is reproduced below with a strike-through the portions deleted by the amendment, and the portions added by the proposed amendment underlined:
A composition for use on a hard surface, the composition comprising;
(i)at least 7.5 wt.% of at least one surfactant;
(ii)at least one adhesion promoter in an amount of about 20 to about 80 wt.%, wherein the adhesion promoter is one or more of substituted or unsubsituted, linear or branched, polyethylene glycol, cellulose, polysaccharide, natural or synthetic polymer, alginate, polyurethane, gelatine, pectine, oleyl amine, alkyl dimethyl amine oxide, alkyl ether sulfate, polyalkoxy substituted compounds, sulfonate, sulfate, stearate, and polyalkoxyalkane a non-ionic surfactant based on a C12 to C30 alkoxylated alcohol and includes a C16-C18 ethoxylated alcohol and wherein the adhesion promoter provides adhesion of the composition to a hard surface to which the composition is applied;
(iii)a transport rate factor of less than about 55 seconds; and
(iv)an adhesion time of greater than about 8 hours;
wherein ~~either (a)~~ the at least one adhesion promoter can be one or more of the at least one surfactant, or if not (a), then (b) a second compound other than (i) is present which is the adhesion promoter, so that (a) or (b) provide adhesion of the composition to a hard surface to which the composition is applied. and wherein the composition includes mineral oil in an amount of about 0.1 wt. % to about 5 wt. %.
Similar amendments are also proposed to the other independent claims. For convenience, I will address the issues pertaining to claim 1 and refer to the other claims as necessary.
Construction of claim 1 in the earlier decision
Claim 1 as accepted can be construed as two alternative options listed as (a) and (b) subject to a proviso. In the proposed amendments, the Applicant has deleted the proviso and option (b), so that claim 1 as proposed is only directed towards option (a).
In the earlier decision, the delegate construed option (a) of the accepted claims as follows[2]:
“Referring to option (a), claim 1 as accepted defines a composition which comprises two components designated (i) and (ii), and has the properties designated (iii) and (iv). Component (i) is defined as at least one surfactant and component (ii) defines at least one adhesion promoter selected from a specified list of substances. It is worth nothing that the listed substances clearly include surfactants and non-surfactants.
It is clear in (i) and (ii) that the use of the term “at least one” indicates that there could be a plurality of substances which makes up (i) or (ii). However regardless of what substances make up (i) and (ii), at least one of the surfactants of (i) must be in an amount of at least 7.5 wt.% and at least one of the adhesion promoters of (ii) must be in an amount of about 20 to 80 wt.% selected from the specified list of substances.”
[2] Reckitt Benckiser LLC v S.C. Johnson & Sons, Inc. [2016] APO 47 at [23] – [24]
The delegate questioned whether[3]:
“…proviso (a) means that the adhesion promoter and the surfactant are the same substance (carrying out two roles), or that the adhesion promoter is a separate substance to the surfactant (where the separate substance is also a surfactant), and therefore two surfactants are used.”
[3] Ibid at [26]
Based on the structure of claim 1 as accepted, the delegated concluded that[4]:
“… in order to produce the composition of claim 1 as accepted it is essential that there must always be two components – at least 7.5 wt.% of at least one surfactant (i) in addition to about 20 to about 80 wt.% of at least one adhesion promoter (ii). While it is possible for the adhesion promoter (i) to also be a surfactant, this will be one of the substances from the selected list and is different surfactant to the at least one surfactant of (ii).”
[4] Ibid at [29]
The differences between claim 1 as accepted and claim 1 as proposed to be amended can be summarised as follows:
·The adhesion promoter is a non-ionic surfactant based on a C12 to C30 alkoxylated alcohol and includes a C16-C18 ethoxylated alcohol instead of being one or more from a specified list of substances.
·Option (a) refers to the at least one adhesion promoter instead of the adhesion promoter
·The proviso and option (b) has been entirely deleted.
·The composition includes mineral oil in an amount of about 0.1 wt. % to about 5 wt. %.
Outcome of the earlier decision
In the earlier decision, the delegate concluded that[5]:
“It follows that removing the restriction that there always be at least 7.5 wt.% of at least one surfactant would result in broadening the scope of the claim. This broader claim would extend the patent monopoly in the sense that it would make something an infringement which is not an infringement already.”
[5] Ibid at [46]
The delegate also found that while the inclusion of mineral oil does in substance fall within the scope of the claim before amendment[6], this must be in an amount less than 5wt.%[7].
[6] Ibid at [48]
[7] Ibid at [63] – [72]
Relevance of the earlier decision
The relevance of the earlier decision can be said to be confined to the relationship between the adhesion promoter and the surfactant defined by option (a) as construed by the delegate in the earlier decision. Option (a) requires that:
“…wherein the at least one adhesion promoter can be one or more of the at least one surfactant…”
The Opponent submits[8]:
“Thus, the Delegate has given a firm construction of claim 1 prior to amendment, and that should not and does not need to be revisited in subsequent. In the case where final determination of an opposition takes place, it is clearly established that matters decided in the earlier decision have been decided once and for all, and are not open to challenge in the final determination. A similar situation applies here in respect of the construction of claim 1 as accepted, the current opposition does not provide an opportunity to revisit the stated construction of claim 1.”
[8] The Opponent’s Submission filed 9 May 2017 at [10]
In support, the Opponent referred to R v Smith; Ex parte Mole Engineering Pty Ltd (1981) 35 ALR 119 (“Ex parte Mole”), Iluka Midwest Ltd v Technological Resources Pty Limited [2002] FCA 49 and Merck, Sharpe & Dohme (Australia) Pty Ltd v Genentech Inc [2016] FCA 324.
The Opponent’s view is that[9]:
“…both the S. 104 amendment oppositions are in the context of the one S.59 opposition, and both amendment oppositions have their starting point the same claims. The separate S. 104 proceedings are both intermediate decisions for the S. 59 opposition. The fact that multiple interim decisions are involved does not mean that those decisions are held in isolation. This is explicitly discussed at 23 (Mason J.) of Ex parte Mole…”
[9] The Opponent’s Submission filed 23 May 2017 at [28]
The relevant sections of Ex parte Mole[10] referred to by the Opponent states:
"First I notice that the right of appeal is given from 'a decision of the Commissioner under this section'. In the result I find that I do not need to decide whether one should construe this expression in sub-s. (5) of s. 60 as referring only to a decision of the Commissioner whereby he does 'decide the case' within the meaning of sub-s. (1). For the purposes of this case I shall simply assume that this is correct and that the expression in sub-s. (5) refers only to some act whereby the Commissioner does 'decide the case'. It is in my opinion quite clear that the case which the Commissioner is bound by statute ultimately to decide is the opposition proceeding, but I see no reason why the opposition proceeding should not be decided by several decisions provided that each of them can be said in a real sense to decide 'the case' as presently constituted so far as that case is at the time susceptible of present decision."
[10] R v Smith; Ex parte Mole Engineering Pty Ltd (1981) 35 ALR 119 at [23] (Mason J. citing Fullagar J. in Broken Hill Proprietary Co. Ltd. v. American Can Co. (1980) VR 143 at [147])
The Opponent also submits that interim decisions are final decisions in the sense that they cannot be reheard, and that the present opposition should be consistent with the findings of the previous decision[11]:
“On four occasions Lloyd-Jacob J. has held that decisions styled "interim decisions" upholding objections made in a notice of opposition made in opposition proceedings under s. 14 of the Patents Act 1949 (U.K.) (which is not relevantly distinguishable from ss. 59 and 60 of our Act) are final decisions in the sense that they cannot be re-heard - see L. Oertling Ltd.'s Application (1959) RPC 148 ; Rose Bros. (Gainsborough) Ltd.'s Application (Amendment) (1960) RPC 247 ; Klangfilm A.G.'s Application (1958) RPC 237 ; E. I. Du Ponte de Nemours Inc.'s Application (1962) RPC 228 . In Oertling (1959) RPC, at p 148 , Lloyd-Jacob J. said:
"An interim decision, no less than a final decision, conclusively determines the position of the ComptrollerGeneral in relation to such matters as the decision may specify. It is the means whereby the Comptroller notifies the parties of his decision in relation to so much of the dispute as is susceptible of present determination and his decision also as to the manner in which the remaining matters in dispute may be dealt with. If, in relation to any matter so decided, a party is not satisfied with the Comptroller-General's ruling, his dissatisfiaction cannot become effective in expression unless and until the ruling is reversed or modified on appeal." (at p350)”
[11] R v Smith; Ex parte Mole Engineering Pty Ltd (1981) 35 ALR 119 at [24] (Mason J.)
In essence, the Opponent’s position is that[12]:
“…it would not be natural justice for the Delegate to construe accepted claim 1 in a manner in any way different from the construction taken previously in the same proceedings. Both S.104 oppositions are in the context of the one S.59 opposition, so the proceedings are the same, and bear upon the ultimate outcome of the S.59 opposition. The Opponent has unfairly been placed in the position of re-arguing a matter already determined, and has had to expend time and money on doing so.”
[12] The Opponent’s Submission filed 23 May 2017 at [36]
The Applicant disagree on the basis that:[13]
“…the Delegate is not bound by a previous reasoning by the same Delegate on the issue. In addition, the present opposition is not “the same proceedings” as the first S.104 opposition – it is an entirely separate opposition to a different proposed set of amendments.”
[13] The Applicant’s Submission filed 16 May 2017 at [21]
While I agree that there should be consistency between decisions issued by the Commissioner, it would not be appropriate to simply ignore the facts and circumstances surrounding each opposition. Each opposition should be considered on its merits. That is, the grounds and particulars, the evidence available, and submissions filed.
In the earlier decision, the delegate found that the opposition was successful on all grounds and refused the amendments[14]. If the Commissioner formally refuses an application, the Commissioner becomes functus officio at the time the decision to refuse becomes operative, and any pending amendment requests in relation to the opposition becomes res nullae[15].
[14] Reckitt Benckiser LLC v S.C. Johnson & Sons, Inc. [2016] APO 47 at [74] – [75]
[15] Kyowa’s Application [1969] FSR 183
On this basis, it is clear that the previous decision is a final decision, and could not be said to be an interim decision of the present opposition or the overarching section 59 opposition. Consequently, I do not consider any of the delegate’s findings in the earlier decision to be binding.
Section 102(2)(a)
A useful test for considering the allowability of an amendment under subsection 102(2)(a) is the Distiller’s test[16] which asks whether a proposed new claim would extend the patent monopoly such that it would make something an infringement that was not an infringement before amendment. This view was expressed in AMP Incorporated v Commissioner of Patents[17] where the High Court stated:
“The amending claim must in-substance fall within the scope of the claims before amendment. The reference to substance imports the kind of test which is appropriate to a consideration of the question whether or not a particular act or a particular article is an infringement of the patent.”
[16] The Distillers Co. Ltd’s application (1953) 70 RPC 221
[17] AMP Incorporated v Commissioner of Patents (1974) 3 ALR 283; 48 ALJR 278 at 289 - 290
The allowability of an amendment under paragraph 102(2)(a) is determined by reference to the scope of the claims as a whole before the amendment. It is not that a proposed new claim must in-substance fall within the scope of every claim before amendment, rather it only needs to in-substance fall within the scope of the broadest claim before amendment.
Claim 1 as amended restricts the adhesion promoter to a non-ionic surfactant based on a C12 to C30 alkoxylated alcohol and includes a C16-C18 ethoxylated alcohol instead of being one or more from a list of specified substances, and requires that the composition includes mineral oil in an amount of about 0.1 wt. % to about 5 wt. %.
I am satisfied that these integers result in a narrowing of the scope of the claim, and are therefore allowable under section 102(2)(a).
The main point of contention relates to the provisio in claim 1 as accepted which states:
“…wherein either (a) the adhesion promoter can be one or more of the at least one surfactant, or if not (a), then (b) a second compound other than (i) is present which is the adhesion promotor …”
Claim 1 as amended results in the deletion of option (b). Option (a) now states:
“…wherein the at least one adhesion promoter can be one or more of the at least one surfactant…”
The Applicant submits that the only change to option (a) is the reference to “the adhesion promoter” to now recite “the at least one adhesion promoter” to resolve an antecedent issue. I am satisfied with the Applicant’s explanation because integer (ii) of claim 1 before and after amendment refers to “at least one adhesion promoter…”
Option (b), which was deleted, was an alternative to option (a).
It follows that restricting the proviso of claim 1 to option (a) does not extend the scope of the claim such that it would make something an infringement that was not an infringement before amendment. That is, option (a) existed before the amendment and therefore could not be said to make something new an infringement.
For completeness I note that it makes no difference even if I were to adopt claim 1 as construed by the delegate in the earlier decision that the adhesion promoter and surfactant cannot be the same substance[18], or the Applicant’s view that a single substance could fulfil the requirements of both the adhesion promoter and the surfactant[19].
[18] Reckitt Benckiser LLC v S.C. Johnson & Sons, Inc. [2016] APO 47 at [29]
[19] The Applicant’s Submission filed 16 May 2017 at [22]

Therefore I am satisfied that claim 1 complies with Section 102(2)(a). The same applies to claims 2 – 19.
Section 102(2)(b)
Section 40(3) requires that the claim or claims must be clear and succinct and fairly based on the matter described in the specification.
The test for fair basis was stated by the High Court in Lockwood Security v Doric Products [2004] HCA 58 as[20]:
“Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
[20] Lockwood Security v Doric Products [2004] HCA 58 at [69]; [2004] 58; 217 CLR 274
In relation to clarity, while the rules of construction for an Australian patent specification are well summarised in Decor Corp v Dart Industries [1988] FCA 399; 13 IPR 385, recently the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228[21]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
[21] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim"[22].
[22] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59
The Opponent submits:
“Claim 1 as proposed to be amended requires the adhesion promoter to be: “about 20 to about 80 wt.%, wherein the adhesion promoter is a non-ionic surfactant based on a C12 to C30 alkoxylated alcohol and includes a C16-C18 ethoxylated alcohol” and “also requires at least 7.5 wt.% of at least one surfactant”. Claim 1 also states that the at least one adhesion promoter can be one or more of the at least one surfactant. That clearly encompasses the situation where the adhesion promoter is (emphasis added) the at least one surfactant.”
The Opponent further submits that when the adhesion promoter is also the surfactant[23]:
“…there is no clarity as to the lower limit defined by the claims for such a multifunctional component – is it the 7.5% wt% of the component acting as surfactant, or is it the 20 wt % of the component acting as the adhesion promoter? Or is it 27.5 wt%, based upon 7.5% of the component acting as surfactant and 20 wt % of the same component acting as an adhesion promoter. Likewise, the upper limited of such a multifunctional component is unclear.”
[23] The Opponent’s Submission filed 9 May 2017 at [21]
The Applicant submits[24]:
“…it is clear that when the at least one adhesion promoter (which is present in 20-80 wt%) is one or more of the at least one surfactant, then that multifunctional component is present in an amount of 20-80%. A multifunctional component present in 20-80% wt% satisfies both the limitations of components (i) and (ii) of the claims and is consistent with all limitations recited in the claim.
Similarly, in construction (a) of the accepted claims, at least 7.5% of at least one surfactant is required, as well as 20-80 wt% of at least one adhesion promoter, “wherein…the adhesion promoter can be one or more of the at least one surfactant”. As discussed above, we submit that it is clear that when the at least one adhesion promoter (which is present in 20-80% wt%) is one or more of the at least one surfactant, then that component (which we maintain can be a single, multifunctional component) is present in an amount of 20-80% wt%. This component, present in an amount of at least 20-80 wt% satisfies both the limitations of components (i) and (ii) of the claims and is consistent with all limitations recited in the claim.”
[24] The Applicant’s Submission filed 16 May 2017 at [41] – [42]
Referring to the claims, I note that claim 1 as accepted and claim 1 as proposed both maintain the following integer (i) and (ii) which requires the claimed composition to comprise (i) at least 7.5 wt.% of at least one surfactant; and (ii) at least one adhesion promoter in an amount of about 20 to about 80 wt.%.
Therefore I do not need to decide whether there are one or two compounds before amendment, and if there are one or two compounds after amendment. It is clear that any clarity issues as to whether the at least one surfactant and the at least one adhesion promoter refer to the same compound or a different compound, and their respective lower and upper limits, does not arise as a result of the amendment.
Consequently, I am satisfied that claim 1 complies with Section 102(2)(b). The same applies to claims 2 – 19.
Conclusion
The opposition is unsuccessful on all grounds.
I will allow the amendments.
Costs
It is clear from Section 210 and Regulation 22.8 that the power of the Commissioner to award cost is discretionary.
During the hearing, the Opponent submitted that in the event the construction of the claims as accepted in the present decision differs from that in the earlier decision, a variation of costs should be considered in the Opponent’s favour. However as there was no need to decide whether I should construe the claims in a manner that is similar or different to that provided by the delegate in the earlier decision, I consider this submission moot.
The opposition is unsuccessful on the ground of section 102(2)(a) and section 102(2)(b).
I therefore award costs according to Schedule 8 against Reckitt Benckiser LLC
Isaac Tan
Delegate of the Commissioner of Patents